#HugeDomains wins #VULF .com #UDRP with #RDNH finding

Registered in 2005, the domain Vulf.com was challenged at the National Arbitration Forum. The Complainant acquired a trademark just this year (2018.)

HugeDomains stated that the domain is generic and that it predates the Complainant’s mark by a dozen years, at least. They asked the panel to deliver a finding of Reverse Domain Name Hijacking.

Michael A. Albert, Scott Blackmer, and Sandra J. Franklin, did just that, ordering the domain to remain with the Respondent, adding the following to support a RDNH finding:

Even though Complainant appears to be self-represented, he should have recognized that a domain name registered years before the Complainant even claims to have begun using the mark could not possibly have been registered in a bad faith effort to exploit the Complainant’s mark.

The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacked rights or legitimate interests in the <vulf.com> domain name, let alone that Respondent had registered and was using the disputed domain name in bad faith. Accordingly, the Panel finds that Complainant has engaged in reverse domain name hijacking.

Complainant submitted a Complaint to the Forum electronically on February 8, 2018; the Forum received payment on February 8, 2018.

On Feb 13, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <vulf.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vulf.com. Also on February 15, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on March 7, 2018.

On March 13, 2018, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, W. Scott Blackmer, and Sandra J. Franklin as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant uses its VULF mark in connection with musical sound recordings, and visual audio recordings featuring music and musical based entertainment. Complainant has rights in the VULF mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,391,899, registered Jan. 30, 2018). See Compl. Annex 1. Respondent’s <vulf.com> domain name is identical to Complainant’s mark.

Respondent has no rights or legitimate interests in the <vulf.com> domain name, as the domain name resolves to an inactive website.

Respondent registered and uses the <vulf.com> domain name in bad faith as Respondent registered the domain name for the primary purpose of selling it. Further, Respondent does not make an active use of the domain name’s resolving webpage.

B. Respondent

Respondent’s <vulf.com> domain name registration predates Complainant’s trademark registration by over twelve years.

Respondent has rights and legitimate interests in the <vulf.com> domain name. The mark is a common dictionary term which has many definitions. See Resp. Annexes K-N. Further, Respondent, a reseller of generic Internet domain names, is in the business of buying and selling Internet domain names that fit a wide variety of uses, and owns over 4,000 four-letter domain names under the .com gTLD. See Resp. Annexes O & P. Additionally, Respondent registered the domain name twelve years prior to Complainant even deciding it wanted to begin using the VULF mark.

Respondent registered the disputed domain name in good faith. Respondent’s domain name predates Complainant’s rights in the VULF mark, as Complainant’s business was not even in existence when Respondent first registered <vulf.com> in 2005. Further, Respondent is a reputable company that engages in the sale of generic domain names.

Respondent argues that Complainant is engaging in reverse domain name hijacking.

FINDINGS

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the VULF mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,391,899, registered Jan. 30, 2018). Registration of a mark with the USPTO suffices to provide at least prima facie evidence of a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). There is no contrary evidence. Accordingly, the Panel finds that Complainant has established rights in the VULF mark for the purposes of Policy ¶ 4(a)(i).

The Panel further agrees with Complainant that Respondent’s <vulf.com> domain name is identical to Complainant’s mark. The Panel notes that the domain name adds only the .com generic top-level domain (“gTLD”), which does not distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that the <vulf.com> domain name is identical to the VULF mark under Policy ¶4(a)(i).

Respondent’s argument that its registration of the <vulf.com> domain name predates Complainant’s alleged rights in the mark, while relevant to other factors discussed below, does not bear on the question presented under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”)

Rights or Legitimate Interests

The Panel finds that Complainant has not established a prima facie case in support of its position that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent is in the business of registering, holding, and selling domain names. It has produced evidence of numerous such sales. The Panel finds that Respondent’s reselling of domain names constitutes a bona fide offering of goods or services.

In this case, Respondent registered the <vulf.com> domain name twelve years prior to Complainant’s registration of the VULF mark with the USPTO. A respondent can be found to have rights and legitimate interests in a domain name when its domain name predates a complainant’s trademark registration. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”). Here, Complainant offers no evidence of common-law trademark rights predating Respondent’s registration of the domain name, nor any other evidence that it has rights superior to Respondent’s. Accordingly, the Panel finds that Respondent has rights or legitimate interests in the <vulf.com> domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant offers no evidence establishing bad faith registration or use of the disputed domain name, particularly in view of Respondent’s 12-year priority of registration of the domain name relative to Complainant’s trademark registration and the absence of any evidence of common-law trademark rights prior to such registration. Accordingly, the Panel finds that Complainant failed to meet its burden to prove bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

Indeed, when, as here, a respondent’s registration of the domain name predates the complainant’s first claimed rights in the corresponding mark, the complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad-faith registration as well as bad-faith use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).

The Panel accordingly finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (finding that the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). See also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that, because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

Reverse Domain Name Hijacking

Respondent alleges that Complainant has acted in bad faith and has engaged in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <vulf.com> domain name, of its rights to use the disputed domain name. Respondent contends, and provides documentary evidence, that Complainant previously attempted to file a UDRP claim against Respondent, yet failed to provide the filing fee, so the claim was dismissed.

Further, as discussed above, Respondent registered the disputed domain in 2005 whereas Complainant has offered no evidence that it obtained any trademark rights until its federal registration for the VULF mark more than twelve years later (shortly before filing its Complaint). Additionally, Respondent notes that Complainant’s filing was cursory, providing little to no evidence or analysis under or in connection with the required Policy elements.

Even though Complainant appears to be self-represented, he should have recognized that a domain name registered years before the Complainant even claims to have begun using the mark could not possibly have been registered in a bad faith effort to exploit the Complainant’s mark.

The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacked rights or legitimate interests in the <vulf.com> domain name, let alone that Respondent had registered and was using the disputed domain name in bad faith. Accordingly, the Panel finds that Complainant has engaged in reverse domain name hijacking. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

DECISION

Complainant having failed to establish two of the three elements required under the Policy, the Panel concludes that Complainant’s request for relief shall be DENIED and orders that the <vulf.com> domain name REMAIN WITH Respondent. The Panel further finds that Complainant engaged in reverse domain name hijacking.

A year ago today!

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